Aéropostale Procurement Company, Inc. v. Privacy Directnic / Domain Name Proxy Service, Inc
Claim Number: FA1407001569233
Complainant is Aéropostale Procurement Company, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Privacy Directnic / Domain Name Proxy Service, Inc (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aeroposttale.com> and <waeropostale.com>, registered with DNC Holdings, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2014; the National Arbitration Forum received payment on July 11, 2014.
On July 15, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <aeroposttale.com> and <waeropostale.com> domain names are registered with DNC Holdings, Inc. and that Respondent is the current registrant of the names. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aeroposttale.com, postmaster@waeropostale.com. Also on July 15, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <aeroposttale.com> and <waeropostale.com> domain names are confusingly similar to Complainant’s AEROPSOTALE mark.
2. Respondent does not have any rights or legitimate interests in the <aeroposttale.com> and <waeropostale.com> domain names.
3. Respondent registered and uses the <aeroposttale.com> and <waeropostale.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its AEROPOSTALE mark to promote clothing, and holds a registration for the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,354,292 registered Aug. 13, 1985).
Respondent registered the <aeroposttale.com> domain name on October 31, 2013, and the <waeropostale.com> domain name on September 19, 2011. Respondent uses the disputed domain names to divert Internet users to websites promoting hyperlinks, some of which offer goods in competition with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant’s USPTO registration of its AEROPOSTALE mark establishes rights in the mark under Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The <aeroposttale.com> and <waeropostale.com> domain names are confusingly similar to Complainant’s mark, as they only add the gTLD “.com” and introduce spelling errors into the mark. These changes are insufficient to distinguish the disputed domain names from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s AEROPOSTALE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has never been commonly known by the disputed domain names. The WHOIS information lists “Privacy Directnic / Domain Name Proxy Service, Inc.” as the registrant. The Panel thus concludes that Respondent is not commonly known by the <aeroposttale.com> and <waeropostale.com> domain names within the meaning of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant claims Respondent uses the <aeroposttale.com> and <waeropostale.com> domain names to shuttle users to websites promoting hyperlink advertisement content. The Panel agrees that the promotion of hyperlink advertisements is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is allowing competitive ads to appear on the websites resolving from the disputed domain names in a manner that is competitive and disruptive to Complainant’s business. The Panel notes that the hyperlinks on the domain names’ websites promote similar content and goods as those sold under the AEROPOSTALE mark. The Panel finds that Respondent’s use of the <aeroposttale.com> and <waeropostale.com> domain names is creating bad faith disruption of Complainant’s commercial enterprise. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is undoubtedly using the disputed domain names to profit through the likelihood of Internet user confusion as to the association of Respondent’s websites with Complainant. The domain names are used solely for purposes of promoting advertisements. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel inferred such links to give rise to Policy ¶ 4(b)(iv) because Internet advertisements are frequently monetized and each time an Internet user clicks on one, the owner of the domain name enjoys some type of benefit. The Panel thus finds Policy ¶ 4(b)(iv) bad faith.
Complainant claims Respondent’s <aeroposttale.com> and <waeropostale.com> domain names are clear examples of typosquatting. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005), where the panel found that typosquatting was the bad faith practice of registering domain names that are intentional misspellings of other’s marks with notice and intent to prey upon such misspellings.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeroposttale.com> and <waeropostale.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 14, 2014
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